Tuesday, 21 October 2014

Starbucks: no 'shared planet' in Colombia

On July this year the American well-known coffee brand Starbucks launched its first store in Colombia. But, before launching its store it applied for the registration of some of its trade marks at the Colombian Superintendency of Industry and Commerce (SIC). While the nominative and graphic marks for Starbucks did not encounter any issue, the same cannot be said for its nominative mark ‘Shared Planet’ applied to be registered in classes 30, 36 and 41 respectively.

Despite the fact that there was not opposition for the mark to be registered SIC proceeded to examine the sign in accordance with Art 150 Decision 486 of the Andean Community (i.e. “At the expiration of the period stipulated in article 148, or if no objections have been filed, the competent national office shall proceed to conduct the examination of registrability.”). By doing so, SIC found that the mark was similar to a previous registered one i.e. ‘Sharé’ (Dossier No 03 085665) registered back in September 2003 to Mr Martinez in class 30 Nice Classification (coffee, tea, vinegar, condiment sauces, etc) and therefore, rejected the said application for just that class. SIC granted to Starbucks the nominative mark ‘Shared Planet’ in classes 36 and 41 after the company appealed to the decision.

In the opinion of Ms Calderon, a lawyer from Prietocarrizosa, "this is a very complex case as there are reasons to believe that the signs have substantial differences that would not allow a consumer to get confused between them, but on the other side it is clear that the main elements of both signs are quite similar, hence, understand the position of the SIC to deny registration ".

It is noticeable from the dossier that the expiration date is/was 30 April 2014 and thus, up to today there has not been renewal of the said mark. However, SIC grants a grace period of 6 months and thus, Mr Martinez do have until 30 October to renew its mark – otherwise, after this day, it would be free to grab.

The newspaper 'La Republica' publishes the view of Mr, Jesus Mendez, an IP lawyer from the firm Wolf & Méndez. He appears to disagree with the ‘grace period’ stating that "In strict legal sense, the mark has expired and in this case [SIC] is extending the period of protection.”

Nevertheless one might remember that according to Art 153 Decision 486 of the Andean Community, the owner of a registered trade mark or any party with a legitimate right “shall be given a grace period of six months following the date of expiration of the registration in which to apply for renewal.” Moreover, the “registered trade mark shall retain its full validity over that period.” That said, and using the same statement as Mr Mendez, ‘in strict legal sense’ Mr Martinez still have a legal base for its mark to be protected and for SIC rejecting the said application from Starbucks.